June 29, 2010

Meaning

A deluge of patent lawyers wanting to explain the import of the Supreme
Court's Bilski bonk has besieged my email inbox, and maybe yours too. Let me save you the
time. Of the SCOTUS patent rulings in the past decade, the implications of
Bilski are the easiest to decipher. What Bilski means is that business methods are patentable. What
Bilski means is that the CAFC § 101 standbys, notably
State Street
and AT&T Corp. are precedentia non grata (yep, just making up
Latin, but you get the point). § 101 as "only a threshold test" may mean more a
retuning elsewhere than another attempt at pinning down 101 itself.

June 28, 2010

Vapors

Today,
9-0, the Supreme Court ruled Bilski's claimed risk hedging an abstract idea,
thereby contravening § 101 as patentable subject matter. Four Supreme Court
justices would have ruled that business methods are categorically not
patentable. So, 5-4, § 101 "precludes a reading of the term 'process' that would
categorically exclude business methods." And, oh, by the way, to hell with
State Street.

June 24, 2010

Bookend

This
coming Monday, June 28, is the last day of the Supreme Court session that
started in October 2009. It is also the final day that Justice Stevens sits on
the high Court before retiring. The first case Justice Stevens authored was Parker v. Flook,
437 U.S. 584 (1978). Flook tried to patent use of a known algorithm, applied to
computerized updating of alarm limits. The claimed method tripped over § 101 as
not "eligible for patent protection," as being merely "the identification of a
limited category of useful, though conventional, post-solution applications of
such a formula." Bilski will also violate § 101, leaving only the
question of exactly how the Court will cast the rejection. Pundit
Hal Wegner
expects the Bilski decision Monday, and puts the odds of Justice Stevens
writing an opinion "almost certain," though hedges "the bigger question" of "whether his opinion will be for the majority or whether it will be a concurring
or dissenting opinion."

June 23, 2010

Even If

"An
annuity is a contract that guarantees the payment of money to an annuitant upon
certain intervals. Annuities are typically used to provide individuals with
long-term economic protection against the risk of outliving their assets."
7,089,201, owned by Lincoln National Life Insurance Company claims
"computerized methods for administering variable annuity plans,"
particularly, paying out "even if the account value is exhausted." Nervy
competitor Transamerica filed a DJ.

June 18, 2010

Broken Chain

7,051,018
&
7,082,437, owned by Encyclopaedia Britannica, "relate to a multimedia
database search system for retrieving textual and graphical information." The
patents "claim priority back to October 26, 1989 through a chain of patents and
patent applications." That priority chain was broken by a prosecution mistake in
an intervening application, 08/113,955. As a result, "Britannica's foreign
patent application, WO91/06916, published on May 16, 1991, was found to
anticipate under 35 U.S.C. § 102(b)."

June 16, 2010

Replication Error

Wordtech
sued a school district in California, and Integrated Networks Solutions (INSC),
along with four INSC employees, for infringing CD copier patents
6,141,298;
6,532,198; and
6,822,932. The school district settled. Only after that did INSC attempt to
allege invalidity, a motion denied by the district court. Jury trial "found that
all defendants infringed all three patents willfully. After trial, the district
court found the case "exceptional" under 35 U.S.C. § 285 and awarded treble
damages, attorneys' fees, interest, and costs to Wordtech." The only appeal
challenge was for the liability verdicts against two INSC employees.

June 14, 2010

Opium for the Masses

Par
Pharmaceutical filed an ANDA to make a time-released version of the opiate
tramadol. Patent holder Purdue sued for infringing
6,254,887 &
7,074,430. What was Purdue smoking? The asserted claims were readily obvious in light of
5,580,578. A charge of inequitable conduct by submitting "a materially
misleading declaration" was merely "overly aggressive" "positive spin," not
intent to deceive.

June 9, 2010

Fractured

TriMed
sued Stryker in 2006 for infringing
5,931,839, which claims "an implantable device used to set bone fractures."
The district court granted summary judgment of noninfringement. Appeal reversed
and remanded for an incorrect claim construction. Stryker then struck pay dirt
with summary judgment invalidity. The appeals court was less than thrilled.

Disturbing the Calm

The
BBC
is reporting that the "Indian government is planning to patent nearly a thousand
yoga postures."
Swami Pragyamurti Saraswati is not pleased: "In fact, I'm distressed at the
way things have developed in recent years." Maybe the good Swami needs to take a
lesson from
Elvis Costello: "I used to be disgusted, and now I try to be amused."

June 8, 2010

Lights Please

B-K
Lighting sued FVC for infringing
RE39,084, which claims an
adjustable mount for a sealed light fixture. After giving the B-K's expert short
shrift, the district court granted summary judgment of invalidity by obviousness
for the asserted claims. The per curiam appeal pitched it back to the district
court, because of "the conflicting testimony of the parties' experts" about
whether a prior art reference disclosed a critical feature. In dissent, Judge
Newman put the spotlight on spotty reasoning.

June 6, 2010

Channeled

Japan-based
Funai Electric, by virtue of
6,115,074, owns a piece of the U.S. digital TV broadcast standard. "At the
suggestion of the lead inventor of the '074 patent and after the '074
provisional patent application was filed, the ATSC adopted the A/65 Standard...
The Federal Communications Commission ("FCC") mandated that, effective May 29,
2008, transmission of digital broadcast television signals comply with the ATSC
A/65 standard.
47 C.F.R. § 73.682(d). Furthermore, beginning on March 1, 2007,
all digital televisions ("DTVs") sold in the United States must be capable of
receiving broadcasts compliant with the ATSC A/65 Standard. See
47 C.F.R. §
15.117(a), (b), (h), (i)." The ITC was the venue for this inevitable patent
battle. Here we tune into another show of how devilish claim construction can be.

June 4, 2010

Animated

Beginning
its enforcement campaign with the beginning of the alphabet, Silicon Graphics
sued ATI and AMD, ultimately for infringing
6,650,327, which claims pipelined floating point graphics calculations. Two
other patents had been asserted, but summary judgment in favor of defendants
wiped the litigation of those. Summary judgment of non-infringement, as well as
a district court finding that a Microsoft license covered part of the action,
wiped '327's assertion. But the counterclaim case proceeded to trial, where the
patent was found not invalid. Then, naturally, appeal from both sides. Besides
claim construction and infringement, a look herein at exhausting defenses and
counterclaims.

June 2, 2010

Spun

Haemonetics
sued Fenwal for infringing centrifuge patent
6,705,983. Litigation whirled away all but claim 16 as asserted. District
court claim construction defined a "centrifugal unit" as a vessel, even, though
the claim preamble read a "centrifugal unit comprising a centrifugal component
and a plurality of tubes." '983 was found not invalid and infringed, resulting
in $11.3 million in lost profits damages and $4.3 million in reasonable royalty damages.
Appeal paid more attention to the preamble. Plus, a new spin to the old standard
of §102 ¶2.

June 1, 2010

Photo Finish

Jack
C. Benun must really have wanted to be in pictures. Benun had a string of
companies in film roll processing (lens-fitted film packages (LFFPs)), which
digital technology has rendered obsolete. In the process of processing, Benun
infringed Fujifilm patents. This episode, after injunction, interdicted
shipment, illicit re-importation, bankruptcy, damages, and a finding of
contempt, "is the sixth appeal from decisions finding liability for infringing
Fuji's LFFP patents by Benun and companies under his control."

Sponsored by

"A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." - SCOTUS in KSR, 2007 -

"Words ought to be a little wild, for they are the assault of thought on the unthinking." - John Maynard Keynes -

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